Thursday, May 03, 2007

Section 201(c) and Photographs

In 2001, the Supreme Court handed won its opinion in Tasini v. New York Times, 533 U.S. 483 an opinion by Justice Ginsburg. That opinion was decided on the revision prong of Section 201(c), which reads:

(c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

The Court held that by authorizing the reproduction of free-lancers’ works in different databases (NEXIS and the GPO), the Times was found to fall outside the 201(c) privilege. I agree the Times should have lost, but think there was a simpler, more-intuitive ground: There is no doubt that NEXIS, the GPO, and other third-party collective works are “entirely different collective works” from “that particular collective work,” i.e., the issue of The New York Times in which the contribution originally appeared. One need not, therefore, have worried about whether there was any “revision of that collective work” since the collective work at issue was not “that particular collective work.”

An April 30th opinion by Judge Raymond Fischer of the Ninth Circuit, Jarvis v. K2, Inc., 2007 WL 1239222 (9th Cir. April 30, 2007), explores another aspect of Section 201(c), the difference between derivative works and collective works. (HT to Bakari Brock). (This link will take you to the opinion and a link to exhibits). The opinion is very well written and reasoned: the damages part of the opinion should also be carefully studied, as the photographer plaintiff cleaned up big-time.

Jarvis delivered photographs (lots of them) to K2, a maker of outdoor sporting goods under some unique contractual provisions very favorable to Jarvis, and many of which K2 appears to have breached. The 201(c) issue arose out of K2’s making collage advertisements out of 24 of Jarvis’ photos, rather than using them as straight reproductions. The district court found that the collage was a collective work and that K2’s conduct was excused by Section 201(c). The court of appeals reversed:

[T]he collage ads were derivative rather than collective works. In accordance with his usual practice, Jarvis delivered all of his images to K2 in the form of identical square slides. The collage ads did not merely compile these slides as an album might, or as Jarvis' own website does. To the contrary, the ads shrank, expanded, distorted, overlaid and otherwise edited the original images, while also combining them with photos taken by other photographers, additional graphics, the K2 logo and marketing slogans. In the “SP5” ad, for example, Jarvis' six photos are of all different shapes and sizes, one of them has a drawing of a falling skier superimposed, there are at least six photos not taken by Jarvis in the arrangement and K2's logo and the slogan “Are You Listening” are prominently displayed. Similarly, in the “FT10” ad, seven of Jarvis' photos are arranged in trapezoidal wooden frames of different sizes along with more than a dozen other photos, and the words “Factory Team: Forty Years in the Making” appear in the upper right-hand section of the ad. The two remaining collage ads, “SP6” and “FT11,” are strikingly similar, respectively, to the SP5 and FT10 ads; the SP6 ad is largely a vertically aligned version of the SP5 ad while the FT11 ad is largely a black-and-white version of the FT10 ad.

The changes to which K2 subjected Jarvis' images are examples of the “recast [ing], transform[ing], or adapt[ing]” and “editorial revisions, annotations, elaborations, or other modifications” that define derivative works. See § 101. Jarvis delivered the images to K2 in one form, and they were subsequently used in the collage ads in a quite different (though still recognizable) form. The ads did not simply compile or collect Jarvis' images, but rather altered them in various ways and fused them with other images and artistic elements into new works that were based on-i.e., derivative of-Jarvis' original images. These circumstances are somewhat similar to Mirage Editions, Inc. v. Albuquerque A.R.T. Co ., 856 F.2d 1341 (9th Cir.1988), in which the appellant purchased art prints, encased them in a black plastic border, glued them onto ceramic tiles and then sold the resulting products. We held that “[b]y borrowing and mounting the preexisting, copyrighted individual art images ... appellant has prepared a derivative work and infringed the subject copyrights.” Id. at 1343. Even more analogous is Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267 (11th Cir.2001), in which the National Geographical Society's animated sequence of magazine cover images “repositioned Greenberg's photograph from a horizontal representation of the diver into a vertical presentation of that diver.” Id. at 1274. According to the court, “[m]anifestly, this ... arrangement of preexisting copyrighted photographs constitutes ... with reference to the Greenberg photograph, a derivative work.” Id.

K2 fails to offer any case law in support of its position that the collage ads were collective works. It does argue that the collage ads “in no way transformed or altered[Jarvis'] preexisting photographs.” However, even a cursory look at the ads-which “transformed or altered” Jarvis' photographs in a variety of ways-demonstrates the weakness of this claim. Counsel for K2 also emphasized during oral argument that the collage ads that appeared on K2's website were identical to the original magazine inserts. But this fact is irrelevant to our inquiry into the ads' nature. A derivative work remains derivative when it is scanned and placed online, just as a collective work would remain collective if it were transferred from one medium to another.

We thus hold that the four collage ads were all derivative rather than collective works. Accordingly, when K2 scanned and placed the ads online after the usage period specified in the 2001 Agreement had terminated, the collective works privilege did not rescue them from infringement.

Other than the reference to Mirage, I applaud the court: it is not the scanning or placing the images online that matter, but rather what was done to them beforehand, in making the collage. The collage was not, as I pointed out at the beginning, “that particular collective work,” it was instead a new work.

4 comments:

One could probably also read an endorsement of the SDNY's result in Bridgeman Art Library in the Court's dismissive attitude toward the claim that scanning a work and putting it online changes its status.

The question isn't squarely presented, but if one were relitigating a Bridgeman-like issue in the 9th Circuit, this would certainly come in handy.

The Ninth Circuit’s Jarvis decision is a good one for its reasoned consideration of the damages issues, particularly in that it indicates that the focus on evaluating damages should be on the substance of the particular evidence presented, and not on whether fair market value should be determined according to a rights-managed or royalty-free basis as the lower court seemed to have done. Photography and much other visual art has traditionally been licensed in a manner in which the fees charged depend on the nature and duration of the usage (i.e., rights-managed licensing). In recent years, royalty-free licensing (which is based on charging a single fee for a wide range of usages of unlimited duration) has become popular. The two licensing models have become a source of considerable controversy and rancor among photography professionals. I think the better view is that damages should be based on the practices of the infringed photographer, i.e., the damages awarded to a photographer who uses the rights-managed approach should be based on the value of a rights-managed licensed basis and vice versa. The argument that all photographs should be valued on a royalty-free basis is inappropriate in my opinion because it fails to consider what an individual photographer is able and does regularly get for his or her images as opposed to what fees the infringer would have paid had he or she licensed images from an owner who charges less. While the opinion does not explicitly state that the trier-of-fact needs to examines the copyright owner’s business practices in determining the proper means for determining actual damages, it seems to be the implicit holding.

The citation to Mirage Editions, Inc. is unfortunate because it would be nice if the Ninth Circuit found a way to disavow this case instead of endorsing it by using it as second-level precedent. I have never seen a reasoned difference for why mounting an image on a tile should be treated different than mounting one on a mat board and putting it in a frame. But even the Seventh Circuit seemed to initially stumble a little bit on this issue in a case involving similar facts, Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997), although they recovered nicely after being set straight by a learned treatise.

It is a bit troubling that the court seems to imply that a work must either be a derivative work *or* a collective work.

I would describe the collages at issue as both derivative works (derived from the photos that comprise the collages) and collective works (i.e. compiling independently copyrightable photos/derivative works).

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